Getting a patent in the microbiome

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You thought a product of nature couldn’t be patented didn’t you? Well turns out you’re right...kind of. With some magic from IP lawyers, you can get darn close. The San Francisco Microbiome Meetup gathered at the Illumina Accelerator with attorneys from Wilson Sonsini, Knobbe Martens, and the Chief Scientist of Naked Biome to talk patent strategies. Here’s what was discussed (pay close attention to #6).

1. Involve a good lawyer early on

Create value for your company by involving a good lawyer early on and file a thoughtful application from the start. This ensures that you will have an actual asset down the line. Don’t try to go it alone - as tempting as that may be -, it’s just going to lead to bad things down the road.

2. Align the business and patent strategies

Your lawyer is part of your team, so find one that you like and work with them to match your patent strategy to your business strategy. For instance, key milestones - e.g., product development, fundraising events -, should line up with key patent milestones. In the end - for biotech and food tech - a company will acquire you in large part for your patent portfolio. There is a lot of value to IP so make it sync with the rest of the business.

3. Turn a “can’t” into a “can”

Prioritize legal expertise, technical expertise, and business acumen equally. Look for a lawyer who understands your science, your investors, and your business. A “can’t” can almost always be turned into a “can” through creative thinking. If your lawyer says “it can’t be done” it might be time to find another lawyer, because it probably can, just depends how badly you want it. Find a patent counsel that is a creative as you are, and make sure they are thinking about the long-term growth and scale of your company.

4. Make a white paper for the legal team

Think to the future and have a clear image in your mind of what your product will look like. Consider putting together a white paper that describes your ideas fully (lawyers love a good white paper). Clearly explaining your vision to a lawyer helps them understand what technical aspects of your technology to protect and which additional countries they should be considering. Once your lawyers understand your technology, they can focus on building your patent strategy while you focus on building your business.

5. Watch your burn-rate because a patent doesn’t come cheap

Expect to spend a fair amount for good global protection, but watch your burn-rate. It is prudent to spread costs over several years and to match your funding strategy with your filing strategy. Though it is important to note that most big law firms have flexible fee arrangements. Some firms may let you defer payment until funding milestones. In fact, some firms might even give you money as an investor. So explore the options with your lawyer and figure out what works best for both of you.

6. File before you speak

The United States is on a “first to file” system, so before you talk publicly about your ideas or offer for something for sale, get your filings in place. If you don’t, your own public disclosure becomes prior art that can prevent you from getting a patent in the future (yes, seriously). So think twice about what you put in your conference presentations. It’s important to note as well, that when talking to investors, they are mainly interested in market size and your team, not the nitty gritty details of your tech. You can get very far without disclosing much.

7. Think big and get broad coverage

It is not enough to simply get something down on paper in the patent office. Even provisional filings, despite being updatable, should be treated as real filings and an opportunity to flesh out important details. There is very little cost for including irrelevant information in the body of your patent, so think big. For the microbiome, think about how you are modulating the entire community. In the case of a probiotic, your value proposition isn’t just the bug itself, but what the bug has the potential to do. Patenting a bug without any utility is useless.

8. Teach yourself to save time and money

Learn the basics of IP on your own to cut time and costs. No one wants to pay their lawyer to work on administrative details such as formatting. “Patent it Yourself” by David Pressman is a great do-it-yourself legal book that can help you help your lawyer, saving everyone time and money in the long run. The book is available online and in local bookstores - I have my copy sitting on my desk at all times now.

Getting a patent strategy right is hard but certainly not impossible. Find a lawyer you trust, read Patent it Yourself book, and make sure you’re thoughtful about how you move forward.

Working at the intersection of food, biotech, and entrepreneurship. Focused on everything microbiome. www.chooselively.com

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